LOS ANGELES — An automotive-restoration company is being sued
for trademark infringement for allegedly using the Shelby mark
without permission.

Tulsa, Oklahoma-based US Restoration LLC is accused
by Carroll Shelby Licensing Inc. and the Carroll Hall Shelby Trust of
making replicas of Shelby GT 350 and Shelby GT 500 vehicles. Shelby
filed a complaint on Jan. 30 in the U.S. District Court for the
Central District of California.

According to Josh Eichenstein, an associate at Beverly Hills-based
Cohen IP Law Group who specializes in intellectual-property
litigation, filing of the suit in California despite the alleged
actions having occurred in Oklahoma is not unusual.

“Plaintiffs almost always prefer to file lawsuits in the states
they reside for a number of reasons,” he told the Northern
California Record in an email. “First, it is practical to
litigate locally to make the proceedings as convenient as possible
for themselves, especially against an out-of-state party. Further,
there are jurisdictional reasons — for example, the plaintiff needs
to allege they were harmed in the state the suit was filed. Finally,
California has a rich body of trademark law.”

Although the suit seems to focus on US Restoration’s use of the
Shelby mark, it’s likely that creation of the replicas without use
of the mark would still have been an issue for the company.

“Protection for the look of the car can fall under design patent
and/or trade dress,” Eichenstein said. “A design patent protects
the way something looks, but not how it works ... Another legal
theory for protection of a car design falls under ‘trade dress.’
Trade dress can be claimed even if it is not registered with the US
Patent and Trademark office. Trade dress protects the visual
appearance of a product, that is unique and distinct in the eyes of
the consumer.”

According to the complaint filed by Shelby, the company issued to
the defendant a cease-and-desist letter in 2014 and negotiated a
licensing agreement. The plaintiff is alleging that US Restoration
breached the agreement, which was then terminated in December 2014,
but the defendant allegedly continued to use the Shelby mark.

Shelby is seeking injunctive relief, legal fees, profits, and
statutory damages up to $2 million per Shelby mark used by US
Restoration.

“It is standard practice to plead the maximum amount of damages
allowed, and trademark law … allows a maximum of $2 million in
damages for willful infringement of a counterfeit mark,”
Eichenstein said. “This does not mean the plaintiffs will get or
expect to collect $2 million, but they have the right to request it.
It is standard practice to swing for the fences.”

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